8.5.1 Causal link between substantial procedural violation and filing of appeal

For the reimbursement of the appeal fee to be equitable the boards require a causal link between the substantial procedural violation and the filing of the appeal (T 388/09, J 9/10). In T 281/03 the board held that for the reimbursement to be equitable the appeal had to be at least in part caused by the substantial procedural violation. In T 1198/97 and T 1101/92 the board expressly observed that there was a causal link between the violation of the appellant's right to be heard and the necessity to appeal; thus reimbursement of the appeal fee was equitable.

In the cases that follow the boards have held that reimbursement was not equitable because no causal link could be established.

In T 893/90 the contested decision to refuse the application on the grounds of lack of novelty was based primarily on document 1, on which, in contrast to document 2, the appellant had had adequate opportunity to put forward comments. The board stated that the decision under appeal had been fully reasoned, and that the procedural violation as regards the reliance on document 2 was thus not sufficiently closely linked to the need to pay an appeal fee for it to be equitable to reimburse the fee.

In T 41/97, a refund was not equitable because the procedural error (refusal of interlocutory revision prior to receipt of the statement of grounds of appeal and before the expiry of the period for filing it) was not the reason the appeal had been filed (see also T 1891/07, T 1994/11).

In T 601/92 the opposition division had not commented, either in a communication or in its decision, on auxiliary request (5) submitted by the patent proprietor in good time before the decision was issued. Because auxiliary request (2), which had been submitted in the appeal proceedings and which preceded auxiliary request (5), was allowed, the board did not see any reason, despite the procedural violation, to reimburse the appeal fee, as this would not have been equitable.

In T 2377/09 the board took the view that reimbursement of the appeal fee solely on the grounds of the established procedural violation would not be in accordance with the equitability requirement of R. 67 EPC 1973 (R. 103 EPC). This was because the rejection decision was based on additional, alternative grounds which had given the appellant no cause to claim a substantial procedural violation and against which it would in any case have had to appeal to get the decision set aside (with reference to T 893/90, T 219/93, T 4/98 (OJ 2002, 139) and T 978/04).

In T 272/05 a substantial procedural violation occurred but had no influence on the outcome of the proceedings; since the party had to appeal anyway, refund of the appeal fee was not equitable.

In T 840/07 the appellant's request which had succeeded in the appeal was the same as the main request which it had filed before the examining division but had later replaced. The appellant had not pursued that request to the point where it became the subject of a decision. The board concluded that the appellant had had no choice but to appeal if it wanted the result it had eventually obtained before the board. To reimburse the appeal fee would have given the appellant a fee-free appeal which would be inequitable.

In T 1891/07 the board held that despite the presence of a substantial procedural violation it would not be equitable to reimburse the appeal fee because the violation could not have been causative in filing the appeal since it occurred after the notice of appeal had been filed.

In T 1990/08 the appellant submitted that the examining division had committed a procedural violation as it had not provided a translation of D1 but had used it to deny inventive step. The board held that even if the inventive step objection including the appraisal of document D1 in the decision were disregarded, the contested decision would still be negative as it had also relied on Art. 84 and 123(2) EPC to refuse the application. Regardless of whether a substantial procedural violation had occurred or not, the appellant had had to appeal in order to obtain a reversal of the first-instance decision. The alleged procedural violation could not have been the immediate and only cause of the need to appeal and to pay an appeal fee.

In T 433/08 the board and the parties agreed that a violation of Art. 113(1) EPC had occurred because the opposition division had relied in its decision on document E2, which had not been referred to at all in the course of the opposition proceedings. The board refused, however, the request of the opponent/appellant to reimburse the appeal fee because it found the reimbursement not equitable in the circumstances of the case at issue. The opposition division would not have reached a decision more favourable to the opponent (and less favourable to the patent proprietor) if it had not taken into account document E2. Thus, the opposition division had not acted to the detriment of the opponent. The board concluded that the rights of the opponent/appellant were not curtailed to an extent that would make the reimbursement of its appeal fee equitable by reason of a substantial procedural violation.

In T 1680/11 the board held that an alleged procedural violation with respect to a decision to rectify under Art. 109 EPC could not justify refunding the appeal fee. A decision to grant an appeal could not be the reason for filing the appeal, as it was - by its very definition - taken after the appeal had been filed.

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